CANCELLATION No 35041 C (INVALIDITY)

What Applications Limited, Tolisons House Bregoge, Buttevant, Ireland (applicant), represented by Mclachlan & Donaldson, Unit 10, 4075 Kingswood Road, Citywest Business Campus, Dublin, Ireland (professional representative)

a g a i n s t

Phorest, 9 Anglesea Row, Dublin, Ireland (EUTM proprietor), represented by LK Shields Solicitors, 39/40 Upper Mount Street, Dublin, Ireland (professional representative).

On 04/12/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark registration No 18 005 411 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against European Union Trade Mark No 18 005 411, Salon Summit (word mark) (EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class  16: Event programs; Events programmes.

Class 35: Event marketing.

Class 41: Organisation of entertainment events.

Class 44: Salons (Hairdressing -); Hairdressing salons; Tanning salons; Beauty salons; Salons (Beauty -); Hair salon services; Beauty salon services; Salon services (Hairdressing -); Hairdressing salon services; Salon services (Beauty -); Slimming salon services; Nail salon services; Hair dressing salon services; Skin care salons.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(a),(b),(c), (d) and (g) EUTMR and Article 59(1)(b) EUTMR alleging that the applicant was acting in bad faith when filing the application.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues, citing the EUTM Regulation, that the individual word elements making up the trade mark are ordinary dictionary words which together are completely descriptive and necessarily devoid of distinctive character in relation to the goods and services, merely describing a meeting/conference or gathering of salon owners or others interested in salons. In addition, the proprietor´s website indicates misleading use of the mark since the proprietor represents its own clients and not all salon owners. Furthermore, use of the mark prefaced by or in conjunction with the proprietors name on its site demonstrates that the mark in and of itself is descriptive and devoid of distinctive character, and that its words should be freely available for use by competitors. The imputed mark was applied for purely to prevent the applicant from using its sign and not for use as a badge of origin.

The applicant provided the following evidence:

• Four website extracts demonstrating trade use of the words SALON and SUMMIT.

• Four website extracts demonstrating descriptive use of the word SUMMIT by various businesses to organise conferences.

• Correspondence to the proprietor in connection with alleged infringing of intellectual property rights.

The proprietor did not submit a response to the application.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union was designated, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of designation (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Non-distinctiveness – Article 7(1)(b) EUTMR

According to settled case-law, the signs referred to in Article 7(1)(b) EUTMR are regarded as incapable of performing the essential function of a trade mark, namely of identifying the origin of the goods, thereby enabling the consumer who acquired the goods to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see judgment of 27/02/2002, T 79/00, ‘LITE’, paragraph 26).

The distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgment of 27/11/2003, T 348/02, ‘Quick’, paragraph 29).

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered.

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T 222/02, Robotunits, EU:T:2003:315, § 34).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.(23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 31).

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. (23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32).

Analysis

Descriptiveness – Article 7(1)(c) EUTMR

It is the applicant´s case that the mark is merely or exclusively made up of ordinary dictionary words which together are descriptive contrary to the provisions of Article 7(1)(c) EUTMR and necessarily devoid of distinctive character in respect of the registered goods and services contrary to the provisions of Article 7(1)(b) EUTMR.

The reference base is the ordinary understanding of the relevant public of the words in question. That can be corroborated by examples of the use of the term in a descriptive manner, or it may clearly follow from the ordinary understanding of the term.

The word mark is made up of the English words “Salon Summit”. The principal meaning of “Salon” according to primary English language references is a place where people have their hair cut or coloured, or have beauty treatments. The word “summit” designates the highest point or part, esp of a mountain or line of communication; top; peak; highest level (importance/rank) or meeting or conference at which leaders e.g. of two or more countries discuss important matters (all definitions sourced from Collins English dictionary). None of these words are new and it is clear that they existed as defined (inter alia) at the time of the application for registration in January 2019.The Cancellation Division agrees with the applicant that together these words make sense. In the context of the goods and services at issue, the relevant consumer (at least in the English language-speaking part of the EU) will simply understand that the goods in Class 16, namely event programs; events programmes together with the entertainment events organised in Class 41 and the event marketing services provided in Class 35, all of which are the subject of the imputed registration, are directed at or intended for the leaders or main players in the beauty salon sector i.e. the mark directly designates the targeted consumer of the goods and services in question (judgment of 18/03/2016, (18/03/2016, T-33/15, BIMBO, EU:T:2016:159 or ‘ellos’ (judgment 27/02/2002, T-219/00, Ellos, EU:T:2002:44 by way of non-exhaustive analogy) and/or the meeting or event which constitutes the subject matter of those goods and services and/or the intended purpose of those goods and services.

In addition, the applicant demonstrated descriptive use of the words “salon” and “summit” in trade. Therefore, the applicant has succeeded in showing that the mark is and was prima facie descriptive, given that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned.(23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32).

It is clear that the word combination at issue could be understood in different ways as indicated by the applicant e.g. that the relevant content is delivered or facilitated by leaders in the salon owner sector etc. however as stated above, only one putative descriptive meaning need apply in concreto in order that the provision precluding registration pursuant to Article 7(1) (c) be triggered for the above services.

The remaining services in Class 44 will be dealt with below.

The mere combination of meanings lent by the individually descriptive elements is not at a remove. The average or professional English-speaking consumer of the goods and services will perceive the composite mark as being the exact sum of its parts.

The mark contains no further element and is exclusively made up of descriptive content. It therefore comes within the ambit of Article 7(1)(c) EUTMR as correctly indicated by the applicant, and that descriptive content was clear to at least the English-language speaking public at the relevant date at least in respect of the goods and services in classes 16, 35 and 41.

Non-distinctiveness – Article 7(1)(b) EUTMR

According to case-law, a mark which is descriptive of characteristics of goods for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of distinctive character too. It follows therefore that the sign is consequentially devoid of distinctiveness within the meaning of art. 7(1)(b) EUTMR at least in respect of the goods and services in classes 16, 35 and 41.

Furthermore, the mark is capable, of being perceived as indicating that the remaining services in class 44, namely salons (hairdressing -); hairdressing salons; tanning salons; beauty salons; salons (beauty -); hair salon services; beauty salon services; salon services (hairdressing -); hairdressing salon services; salon services (beauty -); slimming salon services; nail salon services; hair dressing salon services; skin care salons are aimed at or are provided by leaders in the salon sector as stated above. With this permutation, the mark would be perceived as only giving information about the services or as purely laudatory content by the consumers of these services, indicating that the salon services in question are provided by a salon at its peak. Either way, in and of themselves, the words alone will not be perceived as indicative of commercial origin in the absence of any other element or identifier, as correctly posited by the applicant.

Article 7(1)(a),(d) and (g) and Article 59(1)(b) EUTMR

Since Article 7(1) of Regulation No 207/2009 makes it clear that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a EUTM, it is not necessary to consider the other pleas in the present case. (28/06/2011, T 487/09, ReValue, EU:T:2011:317, § 80; 17/04/2013, T 383/10, Continental, EU:T:2013:193, § 71-72; 12/06/2013, T 598/11, Lean Performance Index, EU:T:2013:311, § 52, and 17/12/2015, T-79/15, “figurative mark 3D”, ECLI:EU:T:2015:999, §34-35).

Conclusion

The merely descriptive and/or non-distinctive content of the mark is and was obvious to a significant part of the relevant public at the material time i.e. the (officially) English-language speaking part, capable of being grasped immediately and without further reflection by the relevant consumer of the goods and services at issue, given that the elements of which it is constituent are and were dictionary terms which make perfect sense together in that context.

In the light of the above, the Cancellation Division concludes that the application is totally successful and that the EUTM should be declared invalid for all the contested goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM holder is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Anne-Lee KRISTENSEN

Keeva DOHERTY

Birgit FILTENBORG

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.